By Mark Engstrom, J.D.
A trademark examining attorney did not err in refusing to register the standard-character mark SHARPIN for cutlery knife blocks with built-in, automatic sharpeners, the Trademark Trial and Appeal Board has ruled in a precedential opinion. Because SHARPIN evoked an immediate association with "sharpen," a phonetically identical and otherwise virtually identical word, and because the mark was not a double entendre (it was submitted in standard-character form, and not as a special form mark, as the applicant had argued), the mark was merely descriptive of the applied-for goods. The refusal to register was therefore affirmed (In re Calphalon Corp., March 20, 2017, Larkin, C.).
Trademark applicant Calphalon Corp. sought registration on the Principal Register of the proposed mark SHARPIN, in standard character form, for goods identified as "cutlery knife blocks which incorporate built-in sharpeners that automatically sharpen knives." The trademark examining attorney refused registration on the ground that the mark was merely descriptive of the identified goods.
Standard character or special form mark? In its request for reconsideration, the applicant sought to amend its drawing of the proposed mark, changing it from SHARPIN to SharpIN. The examining attorney accepted the amendment, but still treated the mark as SHARPIN, in standard characters, throughout the appeal brief. The applicant argued that the examining attorney had improperly concluded that SharpIN was a standard character mark that was equivalent to SHARPIN. The Board had to determine whether the proposed mark should be treated as the special form mark SharpIN (i.e., as limited to that particular combination of upper and lower case letters) or as the standard character mark SHARPIN (i.e., without regard to font style, size, or color).
The Board found that the record was not unclear, within the meaning of Section 807.03(h) of the Trademark Manual of Examining Procedure, on the issue of whether the applicant’s drawing was intended to be a standard character drawing. The Board further found that the applicant’s amended drawing met the requirements of 37 C.F.R. §2.52(a), and that the examining attorney was not required to treat the mark as a special form mark.
According to the Board, the applicant could have sought registration of its mark in a particular stylized form, both initially (when it filed its application) and on amendment. Instead, it sought registration for a trademark in standard character form. Having elected to do that, and having offered no persuasive justification for taking a contrary position for the first time in its reply brief on appeal, the applicant had to have the descriptiveness of the mark assessed "without limitation to any particular depiction of that term."
Mere descriptiveness. The Board found that the SHARPIN mark evoked an immediate association with the phonetically identical and otherwise virtually-identical word "sharpen," and further found that nothing was incongruous about using the word "sharpen"—or its phonetic equivalent SHARPIN—to describe the function of goods that were identified as "cutlery knife blocks which incorporate built-in sharpeners that automatically sharpen knives."
The applicant argued that SHARPIN was a double entendre. In its reply brief, it claimed that the mark had a "clear double meaning" because consumers would "understand the mark to refer both to sharpening knives and that a sharpener is built within the knife block." According to the applicant, the second proposed meaning was not descriptive.
The Board rejected that argument. The first proposed meaning of SHARPIN—that the mark referred to "sharpening knives"—was the only readily-apparent meaning that was conveyed by the mark in standard character form, the Board explained, and that meaning was merely descriptive because it immediately described a key function of the applicant’s goods: they sharpened knives. The mark was not a double entendre because the applicant’s briefs had made it clear that the possible existence of the second proposed meaning of SHARPIN—that a sharpener was "built within the knife block"—inhered in the presentation of the mark in a special form, as SharpIN, and that was not the form of the mark that the applicant had submitted for registration.
Because the special form mark SharpIN was not before the Board, and because the relevant mark—SHARPIN, in standard character form—did not readily evoke the alternative meaning that the applicant had claimed, the applied-for mark was not a double entendre.
Ultimately, the Board agreed with the examining attorney that the evidence of record showed that the standard character mark SHARPIN was merely descriptive of the identified goods. It was the phonetic equivalent "sharpen," the Board explained, a word that meant "to make or become sharp or sharper." Moreover, the applicant had acknowledged that its specimen of use, webpages, and packaging showed that a key function of the goods was to make knives sharp or sharper.
The court reiterated with approval the examining attorney’s statement that "the relevant consumer will immediately know the meaning of the mark and will not need to engage in mental gymnastics to reach that conclusion [because] the meaning is clear and direct." The Board had no doubt that a consumer who understood the relevant goods to be "cutlery knife blocks which incorporate built-in sharpeners that automatically sharpen knives" would understand the SHARPIN mark to convey descriptive information about those goods (i.e., they sharpen knives).
The case is Serial No. 86356713.
Attorneys: Adam S. Weiss (Polsinelli PC) for Calphalon Corp. Michael P. Keating, Trademark Examining Attorney.
Companies: Calphalon Corp.
MainStory: TopStory Trademark USPTO
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